E.Forums and Jurisdiction

The United States Patent and Trademark Office,which,under the Department of Justice,is responsible for administering patent and trademark affairs for taking applications,examining and approving them and maintaining official records.It also has,for the patent examination,a Manual of Patent Examining Procedure (the“MPEP”),detailing specific procedures in granting patents.

The Patent Trial and Appeal Board (PTAB) established by statute to replace the previous Board of Patent Appeals and Interference (BPAI) effective September 19,2012 is responsible for review of adverse decisions of examiners,appeals of reexaminations,conduct derivation proceedings (determination of inventorship); and reviews of inter partes and post-grant proceedings.

Patent litigation is under exclusive jurisdiction of the federal judicial system because the right created for patent is derived from the U.S.federal Constitution.[4] So disputes and controversies relating to patent have to be litigated in federal courts,and no state court may hear a patent case.

Prior to 1996,patent cases initiated in federal district courts may be appealed either to the federal circuit court having appellate jurisdiction over the district court,or to the federal circuit court located in Washington D.C.

The Court of Appeals for the Federal Circuit (CAFC),established in 1982 to replace the Court of Customs and Patent Appeals (CCPA),has been a major player in U.S.patent affairs since its inception.Many of its judges have doctoral degrees in chemistry,electric engineering,mechanics,or computer sciences,and are well versed in biotechnology,genetic engineering and many other advanced technologies,or have experiences as practicing patent attorneys in various industries.In 1996,the CAFC was given exclusive appellate jurisdiction over patent appeals from all federal district courts.This has effectively eliminated the problems of having different result in different federal circuits over the same legal issues,thus alleviating the Supreme Court of its caseload for reviewing too many controversies.

[1]For instance,in the case of DeepSouth Packing Co.v.Latrum Co., the U.S.Supreme Court indicated that an act,which would otherwise constitute patent infringement,but had actually taken place outside U.S.territory,was not actionable unless with clear congressional direction.Soon afterwards,the U.S.Congress moved to close the loophole by adding a further dimension of patent infringement for importing,besides the traditional“make,use,or sell.”

[2]Notice here,the word“Science,”according to the structure of the constitutional language,refers to“knowledge”for the“Authors”in their writings,and is therefore the constitutional authorization for copyright regime; while the term“useful Arts”refers to craftsmanship (or“technology”in modern sense),and is therefore,the authorization for patent regime.For similar reasons,“existing technologies”in U.S.patent language is termed“prior art.”

[3]A frequent ambiguity is about the word“Discoveries.”It is common practice and judicial recognition that a mere discovery of a natural phenomenon or occurrence may not be patented,which principle is even specifically spelled out in some European countries’ patent laws.But the word“discovery”is used here in its broad sense: every invention is a discovery employing certain scientific principles that may not violate the laws of nature.Simply put,when one invents a new machine,he has merely“discovered”a new application of the natural law.In this sense,people cannot actually“invent”something that Nature does not permit.

[4]Article I,Section 8,Clause 8:“Congress shall have Power … to promote the Progress of useful Arts….”